A guest post for Class 46 by Jessica Le Gros and Tirasha Punjabutrachai on multi-class trade mark applications in Thailand:

Some Class 46 readers may already know that since July 2016, Thailand has adopted a multiple class application system as a result of its accession to the Madrid Protocol. Two years have passed but questions still remain as to whether the current multi-class application practice in Thailand fully benefits brand owners. This post aims to shed some light on the situation and highlight the current practice of multi-class applications in Thailand.

In many jurisdictions where multi-class applications are allowed, the practice of divisional applications plays a role and helps smooth over the difficulties encountered when a multi-class application faces a partial refusal. When certain classes of goods or services in a multi-class application face objections, including citation with third party prior applications/registrations, an applicant may choose to split off the remaining classes as a divisional application. In such a case, the divisional application will be treated as a child application separate from the original application (its parent) and it will mature to registration if no opposition is filed against it. There is no need to wait for prosecution of the objected classes or goods/services in the parent multi-class application.

Unlike the above practice, Thailand has instead chosen to allow applicants to drop the objected classes from the multi-class application so that such application can move forward for the non-objected classes. If the applicant does not remove the objected class(es) but decides to file an appeal against the objections to the Trademark Board, then they must bear in mind that the application is at risk of being rejected as a whole if the Trademark Board’s ruling is unfavourable. However, in dropping classes from an application, the applicants still have to approach and consult with the responsible registrar on a case-by-case basis, and within 60 days of receiving notice of the objection(s).

It appears that the lack of a divisional application option is a potential downside to the multi-class system in Thailand. A careful filing strategy is therefore always needed.

The MARQUES International Trade Mark Law & Practice Team monitors the availability and use of multi-class application systems and continues to support the use of a flexible prosecution practice allowing brand owners to appeal against refusals, withdraw non-compliant goods and services and divide applications where necessary. 

By Jessica Le Gros and Tirasha Punjabutrachai. Jessica is Head of Trade Marks at Baker McKenzie in London and a member of the MARQUES International Trade Mark Law & Practice Team. Tirasha is an Associate in the firm’s Bangkok office